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Remarks by Michelle K. Lee at the Patent Quality Summit

USPTO Director Michelle K. Lee

Patent Quality Summit

March 25, 8:40 a.m., Madison Auditorium

Opening Remarks

Remarks as Prepared for Delivery

Thank you, Valencia, and good morning, everyone! I’m so glad you could all be here today. I’m told we have a number of people on WebEx, which is great news. Welcome to all of you in the room and on the web!

I’ve been looking forward to this Patent Quality Summit: First, because it’s a truly unique and unprecedented event in our agency’s history, and second, because patent quality is something I care deeply about. Before my career in IP law, I studied computer science and electrical engineering at MIT. I worked on the front lines of innovation, in the labs at MIT and Hewlett-Packard. And I can still program in more languages than I speak, a point of some pride for me as the head of this agency.

Over the course of my law career, I prosecuted patents, asserted patents, defended against infringement, and licensed, bought, and sold patents, sometimes for very large sums of money. So I understand, from a business perspective, the critical value patents can have for a company looking to enter a market crowded with competitors, as well as the cost to society when a patent issues that should not have. Patent exclusivity—the right of a patent owner to exclude others from using the patented invention—can help protect the competitive position of a new entrant to the marketplace, which in turn attracts investment. And that plays an essential role in giving inventors and investors the confidence to take the necessary risks to launch products and start businesses.

Consider the case of a young female inventor I had the privilege of meeting recently. She invented a hand-held device that uses a micro-needle to take a very small sample of blood, run a chemistry lab in its cartridge, and transmit the findings to patients and doctors. Her device provides critical health data faster at less cost, and using less blood–just a drop, instead of multiple vials. Based on her invention, which she has since patented, this inventor raised $400 million in venture capital, and now has a company valued at $9 billion. That kind of success story is a win-win for everyone: the inventor, the patients who use her device, the employees hired by her company, and our economy and society in general. That is precisely why we want to work you, to ensure that the USPTO is issuing the best quality patents possible.

Now, believe me, I know I’m not the first USPTO leader to emphasize patent quality as a priority. And I certainly won’t be the last. But for too long, due to uncertain budgetary conditions and limited financial resources, the USPTO had to make do with less. That is no longer the case. Thanks to the Leahy-Smith America Invents Act of 2011, the USPTO is now in a historically healthy financial position. And we’ve made significant strides in reducing (and will continue to reduce) our patent pendencies and backlogs. So, for the first time in a long time, the USPTO doesn’t just have to make do. We can focus more than ever on building a world-class patent quality system for American entrepreneurs and innovators.

That’s why Commissioner for Patents Peggy Focarino and I launched the Enhanced Patent Quality Initiative. As you may have read in the Federal Register Notice, it’s built around three core elements:

(1) excellence in our prosecution services;

(2) excellence in customer service; and

(3) excellence in quality measurement.

Our agenda for the next two days reflects these pillars, and positions all of us to dive into the details.

Under the first pillar, we’re focusing on the quality of the work products provided at every stage of the patent process. That includes both the quality of issued patents and the quality of all work products during the filing, examination, and issuance process. We’re committed to issuing patents that clearly define the scope of the patent rights therein, that are within the bounds of the patent statutes as interpreted by the courts, and that provide certainty as to their validity—to encourage investment in research, development, and commercialization. For the second pillar, we’re focusing on the quality of the customer experience at the USPTO. We’re seeking feedback to ensure that customers are treated promptly, fairly, consistently, and professionally at all stages of the examination process. We’re also focusing on maximizing the effectiveness and professionalism of all customer interactions, whether through examiner interviews, official USPTO communications, or call center exchanges. Finally, for the third pillar, we’re focusing on the measurement of quality in order to evaluate our work products and our customer interactions. We’ll spend a decent amount of time at this summit explaining how we currently measure quality and then get your input on how we can do better.

Additionally, under each pillar, we have a series of proposals for your consideration. These proposals reflect concrete ways to potentially achieve enhanced patent quality. These are not meant to preclude other ideas on enhancing patent quality, but rather to begin the conversation. There are six proposals in all, and I’ll summarize them briefly:

· The first is a mechanism for an applicant to request the Office of Patent Quality Assurance to review an examiner’s Office action during prosecution.

· Second, the USPTO is seeking input on whether to conduct automated pre-examination searches that could provide a list of references for an examiner’s consideration for all applications, and if so, what tools might be used to complete those searches.

· Third, the USPTO is seeking the public’s assistance in identifying ways to enhance the clarity and completeness of the official record during prosecution of an application.

· Fourth, the USPTO will describe how we currently measure quality using our Quality Composite Metric, and we look forward to hearing your thoughts on ways we can improve. As part of this proposal we are also considering ways to measure and enhance the effectiveness of examiner training.

· Fifth, the USPTO requests your assistance in determining whether the current compact prosecution model should be modified. In particular, we’re seeking ideas for proactive alternatives to Requests for Continued Examination filings and appeals to the Patent Trial and Appeal Board.

· Sixth and finally, the USPTO is considering the viability of enabling applicants to have in-person interviews with examiners, regardless of the examiner’s duty station. So, for example, applicants might be able to interview cases at our two fully operational regional offices in Denver and Detroit.

In moving forward with the new Enhanced Patent Quality Initiative, as framed by these three pillars and six proposals, we’re seeking to deepen and refine how we think about general aspects of quality. This summit—the first of its kind in our agency’s 200+ year history—is a unique opportunity for you to give feedback and ideas about quality, to ensure the most efficient prosecution processes and the highest quality patents possible.

Now, to set the stage for the discussions and brainstorming at this two-day Summit, let me just say up front that we all recognize there is no "silver bullet" solution here. Creating a world-class quality patent system means that we need to think big and keep all options on the table. If I learned anything from my time in the labs and at Google, it’s that no idea is a bad idea. We all benefit when everyone speaks up and offers their insights. During the discussions today and tomorrow, we welcome an in-depth, specific, and expansive conversation about the proposals in the Federal Register Notice, as well as any and all aspects of enhanced quality you’d like to raise.

Let’s get it all on the table for discussion. Whether you’re here in person or participating online, we want to hear from you. And let me emphasize that this is not a “one-and-done” event. Enhancing patent quality has been a top priority for me and Commissioner Focarino. This historic Summit is just the first of many steps toward developing a new paradigm of patent quality at the USPTO, with your help. Thank you, all. I’m looking forward to some great discussions!

And now, one more item of business before I turn the podium over, it’s my distinct pleasure to announce the selection of my new Deputy Director and Deputy Under Secretary of Commerce for Intellectual Property Russell Slifer! As many of you know, Russ brings an impressive resume to the job, having practiced IP law for the last 20 years and served superbly as the first director of our Denver regional office, which opened for business last summer. For 8 years before that he was the Chief Patent Counsel for Micron Technology in Boise, Idaho. He was also a design engineer for Honeywell and spent more than nine years in private practice in Minnesota helping high-tech clients—including individual inventors, universities, and Fortune 100 companies—build patent portfolios to protect their innovations. In short, he is exactly the kind of leader who will bring immense value to my team, and I couldn’t be happier to have him on board.